The Calcutta High Court has set aside the rejection of grant of patent for an invention titled ‘A device and method for generating and delivery of a Nicotine Aerosol to a user’, where the invention provided a parallel design device that delivers nicotine to the users without burning or heating of tobacco and/or nicotine.
The Patent office had by taking into consideration the ICMR White Paper publication, the Drugs and Cosmetics Act, 1940 and Rules, 1945 framed therein and other Acts, including the Prohibition of Electronic Cigarettes (Production, Manufacture, Import, Export, Transport, Sale, Distribution, Storage and Advertisement) Act, 2019, concluded that the device was an e-cigarette and thus was not patentable as excluded under Section 3(b) of the Patents Act, 1970.
The High Court in this regard noted that the ‘Patents Manual’ does not include tobacco/smoking/ nicotine related inventions at the time of giving examples of inventions that fall within the ambit of Section 3(b) of the Patents Act.
Further, the Court also observed that as per Article 27.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and Article 4quarter of the Paris Convention, the grant of patent is not to be refused on the ground that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions and limitations resulting from the domestic law. It was also noted that Section 3(b) is the intent principle and not the effect or harm principle.
Also, taking note of Section 83 of the Patents Act, the Court observed that the patents granted do not in any way prohibit Central Government in taking measures to protect public health.
Setting aside the impugned order, the Court in ITC Ltd. v. Controller of Patents, Designs & Trademark [Judgement dated 30 April 2025] remanded the matter for reconsideration, as the Court found that the documents on the basis of which the Patent office had refused to grant patent to the appellant were not shared with the applicant and the applicant-appellant was denied an opportunity of hearing to deal with the said documents and the Acts relied upon by the Patent office.